Question

A patent application contains a claim describing a three step process for extracting a valuable chemical form a plant. The claim describes the use of two extracting chemicals with a hot extraction and precipitation step.
     The examiner rejects the claim based on section 103(b) pointing to three patents, each describing one step of the three step process. The second patent mentions the extracting chemicals. The examiner argues that it would have been obvious to one skilled in the art to combine the three steps found in the prior art to construct the claim.

The applicant responded by pointing to the results of experiments in the Appendix of the Specification that demonstrate the high efficiency achieved by this process. Could this response be effective? Explain.

Answer 1

Yes. this response is effective.

The applied patent consits of 3 step process in extracting a valuable chemical from a plant.Although the examiner claims that each of these three steps are found in three different patents filed before, the applicant has not used the procedure what is found in pother patents. the applicant has done his/her studies and come up with a new process, combining the old methods to effectively and efficientluy extract the chemical. this combination of process never existed before nor has it been explicitly mentioned in any of the patent sighted by the examiner. Also the applkicant has mentioned in the appendix, experimental results wehichshows the higher efficiency of the new process. hence I feel that the applicants claim is valid and the patent should be accepted